Scope of Estoppel Considered for Review
IPR estoppel is defined by 35 U.S.C. 315(e). The statute recites in relevant part that any claim subject to a failed IPR may not be argued by that petitioner in an infringement action as “invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 315(e)(2)
While there has been much debate in the lower courts as to the scope of “reasonably could have raised,” and even “ground,” the debate currently before the SCOTUS in Apple et al., v. California Institute of Technology turns on the meaning of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding. If estoppel is determined at the outset of petition drafting that scope is far broader than what could be added to an ongoing IPR proceeding (i.e., next to nothing).
Should this question ultimately taken up, the outcome could have significant consequences.